The beginning of a new chapter: House approves their version of patent reform

by Orlando Lopez

June 24th, 2011

On June 23, 2011, the House approved their version of the America Invents (Patent Reform) Act. The Senate had previously approved their version. Both the Senate and the House versions move the US patent system to a first to file system, which in the U.S. is called “first inventor to file.” The House version does not completely ensure that the fees collected by the Patent Office are not diverted (“cannibalized”) for other users. The Manager’s Amendment, which was also approved, included the formation of a Patent and Trademark Fee Reserve Fund; however, there is not much to prevent the “raiders” of the Patent Fund from going back to their usual ways. Another difference between the House version and the Senate version is the formalization of the “practicing the prior art” defense to patent infringement. The “practicing the prior art” defense includes an exception in the Manager’s Amendment, so that it can not be applied to patents originating from universities and technology transfer organizations (probably in response to the objections of the technology transfer community).

The move to first to file will change both the practice of patent law and the practices of the patent applicants. The change in the law makes the practice cleaner, as there will be no more “swearing back.” Not being able to refer back to the date of invention, the applicants will have to ensure that provisional patent applications can stand on their own. While skimpy provisionals have never been within the statute, they have been known to exist in the practice. In future posts, we will further expand on the impact, due to the change to first to file, to the patent practice and the impact on the patent applicants.

The courts will likely be busy interpreting the new statute. While a constitutional challenge is possible based on the intent of the framers (especially Madison and Jefferson), on the deletion of the prohibition against abandoning the invention (the present 35 USC 102 (c)) and the emasculation of the best mode requirement, such a challenge would spend a long time in the court system and cannot be assumed to be successful. The practitioners and the applicants are better advised to learn to live with the new system.